Graham et al. v. John Deere Co. of Kansas City et al.
SUPREME COURT OF THE UNITED STATES
383 U.S. 1 (1966)
Argued October 14, 1965. Decided February 21, 1966
CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE EIGHTH CIRCUIT
In No. 11, petitioners sued for infringement of a patent, consisting of a combination of old
mechanical elements, for a device designed to absorb shock from plow shanks in rocky soil to
prevent damage to the plow. In 1955, the Fifth Circuit held the patent valid, ruling that a
combination is patentable when it produces an "old result in a cheaper and otherwise more
advantageous way." Here, the Eighth Circuit held that, since there was no new result in the
combination, the patent was invalid. Petitioners in Nos. 37 and 43 filed actions for declaratory
judgments declaring invalid respondent's patent relating to a plastic finger sprayer with a "holddown" cap used as a built-in dispenser for containers with liquids, principally insecticides. By
cross-action, respondent claimed infringement. The District Court and the Court of Appeals
sustained the patent. Held: The patents do not meet the test of the "nonobvious" nature of the
"subject matter sought to be patented" to a person having ordinary skill in the pertinent art, set
forth in § 103 of the Patent Act of 1952, and are therefore invalid. Pp. 383 U. S. 3-37.
MR. JUSTICE CLARK delivered the opinion of the Court.
After a lapse of 15 years, the Court again focuses its attention on the patentability of inventions
under the standard of Art. I, § 8, cl. 8, of the Constitution and under the conditions prescribed by
the laws of the United States. Since our last expression on patent validity, Great A. & P. Tea Co.
v. Supermarket Equipment Corp., 340 U. S. 147 (1950), the Congress has, for the first time,
expressly added a third statutory dimension to the two requirements of novelty and utility that
had been the sole statutory test since the Patent Act of 1793. This is the test of obviousness, i.e.,
whether
"the subject matter sought to be patented and the prior art are such that the subject matter as a
whole would have been obvious at the time the invention was made to a person having ordinary
skill in the art to which said subject matter pertains. Patentability shall not be negatived by the
manner in which the invention was made." § 103 of the Patent Act of 1952, 35 U.S.C. § 103
(1964 ed.).
1
The questions, involved in each of the companion cases before us, are what effect the 1952 Act
had upon traditional statutory and judicial tests of patentability and what definitive tests are now
required. We have concluded that the 1952 Act was intended to codify judicial precedents
embracing the principle long ago announced by this Court in Hotchkiss v. Greenwood, 11 How.
248 (1851), and that, while the clear language of § 103 places emphasis on an inquiry into
obviousness, the general level of innovation necessary to sustain patentability remains the same.
* * *
II
At the outset, it must be remembered that the federal patent power stems from a specific
constitutional provision which authorizes the Congress "To promote the Progress of . . . useful
Arts, by securing for limited Times to . . . Inventors the exclusive Right to their . . . Discoveries."
Art. I, § 8, cl. 8. The clause is both a grant of power and a limitation. This qualified authority,
unlike the power often exercised in the sixteenth and seventeenth centuries by the English
Crown, is limited to the promotion of advances in the "useful arts." It was written against the
backdrop of the practices -- eventually curtailed by the Statute of Monopolies -- of the Crown in
granting monopolies to court favorites in goods or businesses which had long before been
enjoyed by the public. See Meinhardt, Inventions, Patents and Monopoly, pp. 30-35 (London,
1946). The Congress in the exercise of the patent power may not overreach the restraints
imposed by the stated constitutional purpose. Nor may it enlarge the patent monopoly without
regard to the innovation, advancement or social benefit gained thereby. Moreover, Congress may
not authorize the issuance of patents whose effects are to remove existent knowledge from the
public domain, or to restrict free access to materials already available. Innovation, advancement,
and things which add to the sum of useful knowledge are inherent requisites in a patent system
which, by constitutional command, must "promote the Progress of . . . useful Arts." This is the
standard expressed in the Constitution, and it may not be ignored. And it is in this light that
patent validity "requires reference to a standard written into the Constitution." Great A. & P. Tea
Co. v. Supermarket Equipment Corp., supra, at 340 U. S. 154 (concurring opinion).
Within the limits of the constitutional grant, the Congress may, of course, implement the stated
purpose of the Framers by selecting the policy which, in its judgment, best effectuates the
constitutional aim. This is but a corollary to the grant to Congress of any Article I power.
Gibbons v. Ogden, 9 Wheat. 1. Within the scope established by the Constitution, Congress may
set out conditions and tests for patentability. McClurg v. Kingsland, 1 How. 202, 42 U. S. 206. It
is the duty of the Commissioner of Patents and of the courts in the administration of the patent
system to give effect to the constitutional standard by appropriate application, in each case, of
the statutory scheme of the Congress.
Congress quickly responded to the bidding of the Constitution by enacting the Patent Act of
1790 during the second session of the First Congress. It created an agency in the Department of
State headed by the Secretary of State, the Secretary of the Department of War and the Attorney
General, any two of whom could issue a patent for a period not exceeding 14 years to any
petitioner that "hath . . . invented or discovered any useful art, manufacture, . . . or device, or any
2
improvement therein not before known or used" if the board found that "the invention or
discovery [was] sufficiently useful and important. . . ." 1 Stat. 110. This group, whose members
administered the patent system along with their other public duties, was known by its own
designation as "Commissioners for the Promotion of Useful Arts."
Thomas Jefferson, who as Secretary of State was a member of the group, was its moving spirit,
and might well be called the "first administrator of our patent system." See Federico, Operation
of the Patent Act of 1790, 18 J.Pat.Off.Soc. 237, 238 (1936). He was not only an administrator of
the patent system under the 1790 Act, but was also the author of the 1793 Patent Act. In addition,
Jefferson was himself an inventor of great note. His unpatented improvements on plows, to
mention but one line of his inventions, won acclaim and recognition on both sides of the
Atlantic. Because of his active interest and influence in the early development of the patent
system, Jefferson's views on the general nature of the limited patent monopoly under the
Constitution, as well as his conclusions as to conditions for patentability under the statutory
scheme, are worthy of note.
Jefferson, like other Americans, had an instinctive aversion to monopolies. It was a monopoly on
tea that sparked the Revolution, and Jefferson certainly did not favor an equivalent form of
monopoly under the new government. His abhorrence of monopoly extended initially to patents
as well. From France, he wrote to Madison (July, 1788) urging a Bill of Rights provision
restricting monopoly, and as against the argument that limited monopoly might serve to incite
"ingenuity," he argued forcefully that "the benefit even of limited monopolies is too doubtful to
be opposed to that of their general suppression," V Writings of Thomas Jefferson at 47 (Ford ed.,
1895).
His views ripened, however, and, in another letter to Madison (Aug., 1789) after the drafting of
the Bill of Rights, Jefferson stated that he would have been pleased by an express provision in
this form:
"Art. 9. Monopolies may be allowed to persons for their own productions in literature, & their
own inventions in the arts, for a term not exceeding ___ years, but for no longer term & no other
purpose." Id. at 113.
And he later wrote:
"Certainly an inventor ought to be allowed a right to the benefit of his invention for some certain
time. . . . Nobody wishes more than I do that ingenuity should receive a liberal encouragement."
Letter to Oliver Evans (May, 1807), V Writings of Thomas Jefferson at 75-76 (Washington ed.).
Jefferson's philosophy on the nature and purpose of the patent monopoly is expressed in a letter
to Isaac McPherson (Aug., 1813), a portion of which we set out in the margin. [Footnote 2] He
rejected a natural rights theory in intellectual property rights and clearly recognized the social
and economic rationale of the patent system. The patent monopoly was not designed to secure to
the inventor his natural right in his discoveries. Rather, it was a reward, an inducement, to bring
3
forth new knowledge. The grant of an exclusive right to an invention was the creation of society
-- at odds with the inherent free nature of disclosed ideas -- and was not to be freely given. Only
inventions and discoveries which furthered human knowledge, and were new and useful,
justified the special inducement of a limited private monopoly. Jefferson did not believe in
granting patents for small details, obvious improvements, or frivolous devices. His writings
evidence his insistence upon a high level of patentability.
As a member of the patent board for several years, Jefferson saw clearly the difficulty in
"drawing a line between the things which are worth to the public the embarrassment of an
exclusive patent, and those which are not." The board on which he served sought to draw such a
line and formulated several rules which are preserved in Jefferson's correspondence. [Footnote 3]
Despite the board's efforts, Jefferson saw "with what slow progress a system of general rules
could be matured." Because of the "abundance" of cases and the fact that the investigations
occupied
"more time of the members of the board than they could spare from higher duties, the whole was
turned over to the judiciary, to be matured into a system under which every one might know
when his actions were safe and lawful."
Letter to McPherson, supra, at 181, 182. Apparently Congress agreed with Jefferson and the
board that the courts should develop additional conditions for patentability. Although the Patent
Act was amended, revised or codified some 50 times between 1790 and 1950, Congress steered
clear of a statutory set of requirements other than the bare novelty and utility tests reformulated
in Jefferson's draft of the 1793 Patent Act.
III
The difficulty of formulating conditions for patentability was heightened by the generality of the
constitutional grant and the statutes implementing it, together with the underlying policy of the
patent system that "the things which are worth to the public the embarrassment of an exclusive
patent," as Jefferson put it, must outweigh the restrictive effect of the limited patent monopoly.
The inherent problem was to develop some means of weeding out those inventions which would
not be disclosed or devised but for the inducement of a patent.
This Court formulated a general condition of patentability in 1851 in Hotchkiss v. Greenwood,
11 How. 248. The patent involved a mere substitution of materials -- porcelain or clay for wood
or metal in doorknobs -- and the Court condemned it, holding: "[U]nless more ingenuity and
skill . . . were required . . . than were possessed by an ordinary mechanic acquainted with the
business, there was an absence of that degree of skill and ingenuity which constitute essential
elements of every invention. In other words, the improvement is the work of the skilful
mechanic, not that of the inventor." At p. 267.
Hotchkiss, by positing the condition that a patentable invention evidence more ingenuity and
skill than that possessed by an ordinary mechanic acquainted with the business, merely
distinguished between new and useful innovations that were capable of sustaining a patent and
4
those that were not. The Hotchkiss test laid the cornerstone of the judicial evolution suggested by
Jefferson and left to the courts by Congress. The language in the case, and in those which
followed, gave birth to "invention" as a word of legal art signifying patentable inventions. Yet, as
this Court has observed,
"[t]he truth is, the word ['invention'] cannot be defined in such manner as to afford any
substantial aid in determining whether a particular device involves an exercise of the inventive
faculty or not."
McClain v. Ortmayer, 141 U. S. 419, 141 U. S. 427 (1891); Great A. & P. Tea Co. v.
Supermarket Equipment Corp., supra, at 340 U. S. 151. Its use as a label brought about a large
variety of opinions as to its meaning both in the Patent Office, in the courts, and at the bar. The
Hotchkiss formulation, however, lies not in any label, but in its functional approach to questions
of patentability. In practice, Hotchkiss has required a comparison between the subject matter of
the patent, or patent application, and the background skill of the calling. It has been from this
comparison that patentability was in each case determined.
IV
The 1952 Patent Act
The Act sets out the conditions of patentability in three sections. An analysis of the structure of
these three sections indicates that patentability is dependent upon three explicit conditions:
novelty and utility, as articulated and defined in § 101 and § 102, and nonobviousness, the new
statutory formulation, as set out in § 103. The first two sections, which trace closely the 1874
codification, express the "new and useful" tests which have always existed in the statutory
scheme and, for our purposes here, need no clarification. The pivotal section around which the
present controversy centers is § 103. It provides:
"§ 103. Conditions for patentability; non-obvious subject matter"
"A patent may not be obtained though the invention is not identically disclosed or described as
set forth in section 102 of this title, if the differences between the subject matter sought to be
patented and the prior art are such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in the art to which said subject
matter pertains. Patentability shall not be negatived by the manner in which the invention was
made. "
The section is cast in relatively unambiguous terms. Patentability is to depend, in addition to
novelty and utility, upon the "non-obvious" nature of the "subject matter sought to be patented"
to a person having ordinary skill in the pertinent art.
The first sentence of this section is strongly reminiscent of the language in Hotchkiss. Both
formulations place emphasis on the pertinent are existing at the time the invention was made, and
both are implicitly tied to advances in that art. The major distinction is that Congress has
5
emphasized "nonobviousness" as the operative test of the section, rather than the less definite
"invention" language of Hotchkiss that Congress thought had led to "a large variety" of
expressions in decisions and writings. In the title itself, the Congress used the phrase "Conditions
for patentability; non-obvious subject matter" (italics added), thus focusing upon
"nonobviousness," rather than "invention." The Senate and House Reports, S.Rep. No. 1979, 82d
Cong., 2d Sess. (1952); H.R.Rep. No. 1923, 82d Cong., 2d Sess. (1952), reflect this emphasis in
these terms:
"Section 103, for the first time in our statute, provides a condition which exists in the law and
has existed for more than 100 years, but only by reason of decisions of the courts. An invention
which has been made, and which is new in the sense that the same thing has not been made
before, may still not be patentable if the difference between the new thing and what was known
before is not considered sufficiently great to warrant a patent. That has been expressed in a large
variety of ways in decisions of the courts and in writings. Section 103 states this requirement in
the title. It refers to the difference between the subject matter sought to be patented and the prior
art, meaning what was known before as described in section 102. If this difference is such that
the subject matter as a whole would have been obvious at the time to a person skilled in the art,
then the subject matter cannot be patented."
"That provision paraphrases language which has often been used in decisions of the courts, and
the section is added to the statute for uniformity and definiteness. This section should have a
stabilizing effect and minimize great departures which have appeared in some cases." H.R.Rep.,
supra, at 7; S.Rep., supra, at 6.
It is undisputed that this section was, for the first time, a statutory expression of an additional
requirement for patentability, originally expressed in Hotchkiss. It also seems apparent that
Congress intended by the last sentence of § 103 to abolish the test it believed this Court
announced in the controversial phrase "flash of creative genius," used in Cuno Engineering
Corp. v. Automatic Devices Corp., 314 U. S. 84 (1941). [Footnote 7]
It is contended, however, by some of the parties and by several of the amici that the first sentence
of § 103 was intended to sweep away judicial precedents and to lower the level of patentability.
Others contend that the Congress intended to codify the essential purpose reflected in existing
judicial precedents -- the rejection of insignificant variations and innovations of a commonplace
sort -- and also to focus inquiries under § 103 upon nonobviousness, rather than upon
"invention," as a means of achieving more stability and predictability in determining
patentability and validity.
The Reviser's Note to this section, [Footnote 8] with apparent reference to Hotchkiss, recognizes
that judicial requirements as to "lack of patentable novelty [have] been followed since at least as
early as 1850." The note indicates that the section was inserted because it "may have some
stabilizing effect, and also to serve as a basis for the addition at a later time of some criteria
which may be worked out." To this same effect are the reports of both Houses, supra, which
state that the first sentence of the section"paraphrases language which has often been used in
decisions of the courts, and the section is added to the statute for uniformity and definiteness."
6
We believe that this legislative history, as well as other sources, show that the revision was not
intended by Congress to change the general level of patentable invention. We conclude that the
section was intended merely as a codification of judicial precedents embracing the Hotchkiss
condition, with congressional directions that inquiries into the obviousness of the subject matter
sought to be patented are a prerequisite to patentability.
V
Approached in this light, the § 103 additional condition, when followed realistically, will permit
a more practical test of patentability. The emphasis on non-obviousness is one of inquiry, not
quality, and, as such, comports with the constitutional strictures.
While the ultimate question of patent validity is one of law, Great A. & P. Tea Co. v.
Supermarket Equipment Corp., supra, at 340 U. S. 155, the § 103 condition, which is but one of
three conditions, each of which must be satisfied, lends itself to several basic factual inquiries.
Under § 103, the scope and content of the prior art are to be determined; differences between the
prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject
matter is determined. Such secondary considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized to give light to the circumstances
surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or
nonobviousness, these inquiries may have relevancy. See Note, Subtests of "Nonobviousness": A
Nontechnical Approach to Patent Validity, 112 U.Pa.L.Rev. 1169 (1964).
This is not to say, however, that there will not be difficulties in applying the nonobviousness test.
What is obvious is not a question upon which there is likely to be uniformity of thought in every
given factual context. The difficulties, however, are comparable to those encountered daily by
the courts in such frames of reference as negligence and scienter, and should be amenable to a
case-by-case development. We believe that strict observance of the requirements laid down here
will result in that uniformity and definiteness which Congress called for in the 1952 Act.
While we have focused attention on the appropriate standard to be applied by the courts, it must
be remembered that the primary responsibility for sifting out unpatentable material lies in the
Patent Office. To await litigation is, for all practical purposes, to debilitate the patent system. We
have observed a notorious difference between the standards applied by the Patent Office and by
the courts. While many reasons can be adduced to explain the discrepancy, one may well be the
free rein often exercised by Examiners in their use of the concept of "invention." In this
connection, we note that the Patent Office is confronted with a most difficult task. Almost
100,000 applications for patents are filed each year. Of these, about 50,000 are granted, and the
backlog now runs well over 200,000. 1965 Annual Report of the Commission of Patents 13-14.
This is itself a compelling reason for the Commissioner to strictly adhere to the 1952 Act as
interpreted here. This would, we believe, not only expedite disposition, but bring about a closer
concurrence between administrative and judicial precedent.
7
Although we conclude here that the inquiry which the Patent Office and the courts must make as
to patentability must be beamed with greater intensity on the requirements of § 103, it bears
repeating that we find no change in the general strictness with which the overall test is to be
applied. We have been urged to find in § 103 a relaxed standard, supposedly a congressional
reaction to the "increased standard" applied by this Court in its decisions over the last 20 or 30
years. The standard has remained invariable in this Court. Technology, however, has advanced,
and with remarkable rapidity in the last 50 years. Moreover, the ambit of applicable art in given
fields of science has widened by disciplines unheard of a half century ago. It is but an
evenhanded application to require that those persons granted the benefit of a patent monopoly be
charged with an awareness of these changed conditions. The same is true of the less technical,
but still useful, arts. He who seeks to build a better mousetrap today has a long path to tread
before reaching the Patent Office.
VI
We now turn to the application of the conditions found necessary for patentability to the cases
involved here:
A. The Patent in Issue in No. 11, Graham v. John Deere Co.
This patent, No. 2,627,798 (hereinafter called the '798 patent) relates to a spring clamp which
permits plow shanks to be pushed upward when they hit obstructions in the soil, and then springs
the shanks back into normal position when the obstruction is passed over.
* * *
Graham did not urge before the Patent Office the greater "flexing" qualities of the '798 patent
arrangement which he so heavily relied on in the courts. The sole element in patent '798 which
petitioners argue before us is the interchanging of the shank and hinge plate and the
consequences flowing from this arrangement. The contention is that this arrangement -- which
petitioners claim is not disclosed in the prior art -- permits the shank to flex under stress for its
entire length. . . . Petitioners say that this difference in flex, though small, effectively absorbs
the tremendous forces of the shock of obstructions, whereas prior art arrangements failed.
The Obviousness of the Differences
We cannot agree with petitioners. We assume that the prior art does not disclose such an
arrangement as petitioners claim in patent '798. Still we do not believe that the argument on
which petitioners' contention is bottomed supports the validity of the patent. The tendency of the
shank to flex is the same in all cases. If free-flexing, as petitioners now argue, is the crucial
difference above the prior art, then it appears evident that the desired result would be obtainable
by not boxing the shank within the confines of the hinge. . . . The only other effective place
available in the arrangement was to attach it below the hinge plate and run it through a stirrup or
bracket that would not disturb its flexing qualities. Certainly a person having ordinary skill in the
prior art, given the fact that the flex in the shank could be utilized more effectively if allowed to
8
run the entire length of the shank, would immediately see that the thing to do was what Graham
did, i.e., invert the shank and the hinge plate.
Petitioners' argument basing validity on the free-flex theory, raised for the first time on appeal, is
reminiscent of Lincoln Engineering Co. of Illinois v. Stewart-Warner Corp., 303 U. S. 545
(1938), where the Court called such an effort
"an afterthought. No such function . . . is hinted at in the specifications of the patent. If this were
so vital an element in the functioning of the apparatus, it is strange that all mention of it was
omitted."
At p. 303 U. S. 550. No "flexing" argument was raised in the Patent Office. Indeed, the trial
judge specifically found that "flexing is not a claim of the patent in suit . . . ," and would not
permit interrogation as to flexing in the accused devices. Moreover, the clear testimony of
petitioners' experts shows that the flexing advantages flowing from the '798 arrangement are not,
in fact, a significant feature in the patent.
We find no nonobvious facets in the '798 arrangement
It is so ordered.
Selected Footnotes
[2] "Stable ownership is the gift of social law, and is given late in the progress of society. It
would be curious, then, if an idea, the fugitive fermentation of an individual brain, could, of
natural right, be claimed in exclusive and stable property. If nature has made anyone thing less
susceptible than all others of exclusive property, it is the action of the thinking power called an
idea, which an individual may exclusively possess as long as he keeps it to himself; but the
moment it is divulged, it forces itself into the possession of everyone, and the receiver cannot
dispossess himself of it. Its peculiar character, too, is that no one possesses the less because
every other possesses the whole of it. He who receives an idea from me receives instruction
himself without lessening mine, as he who lights his taper at mine, receives light without
darkening me. That ideas should freely spread from one to another over the globe, for the moral
and mutual instruction of man and improvement of his condition, seems to have been peculiarly
and benevolently designed by nature when she made them, like fire, expansible over all space,
without lessening their density in any point, and, like the air in which we breathe, move, and
have our physical being, incapable of confinement or exclusive appropriation. Inventions then
cannot, in nature, be a subject of property. Society may give an exclusive right to the profits
arising from them, as an encouragement to men to pursue ideas which may produce utility, but
this may or may not be done according to the will and convenience of the society, without claim
or complaint from anybody." VI Writings of Thomas Jefferson at 180-181 (Washington ed.).
9
[3] "[A] machine of which we are possessed might be applied by every man to any use of which
it is susceptible." Letter to Isaac McPherson, supra, at 181.
"[A] change of material should not give title to a patent. As the making a ploughshare of cast,
rather than of wrought, iron; a comb of iron, instead of horn or of ivory. . . ." Ibid.
"[A] mere change of form should give no right to a patent, as a high-quartered shoe instead of a
low one, a round hat instead of a three-square; or a square bucket instead of a round one." Id. at
181-182.
"[A combined use of old implements.] A man has a right to use a saw, an axe, a plane separately;
may he not combine their uses on the same piece of wood?" Letter to Oliver Evans, (Jan., 1814),
VI Writings of Thomas Jefferson at 298 (Washington ed.).
[6] The corresponding provision in the preliminary draft was titled "Conditions for patentability,
lack of invention" (italics added), Proposed Revision and Amendment of the Patent Laws,
Preliminary Draft with Notes, House Committee on the Judiciary (Committee Print, 1950).
[7] The sentence in which the phrase occurs reads: "[T]he new device, however useful it may be,
must reveal the flash of creative genius, not merely the skill of the calling." At p. 314 U. S. 91.
Although some writers and lower courts found in the language connotations as to the frame of
mind of the inventors, none was so intended. The opinion approved Hotchkiss specifically, and
the reference to "flash of creative genius" was but a rhetorical embellishment of language going
back to 1833. Cf. "exercise of genius," Shaw v. Cooper, 7 Pet. 292; "inventive genius,"
Reckendorfer v. Faber, 92 U. S. 347 (1876); Concrete Appliance Co. v. Gomery, 269 U. S. 177;
"flash of thought," Densmore v. Scofield, 102 U. S. 375 (1880); "intuitive genius," Potts v.
Creager, 155 U. S. 597 (1895). Rather than establishing a more exacting standard, Cuno merely
rhetorically restated the requirement that the subject matter sought to be patented must be beyond
the skill of the calling. It was the device, not the invention, that had to reveal the "flash of
creative genius." See Boyajian, The Flash of Creative Genius, An Alternative Interpretation, 25
J.Pat.Off.Soc. 776, 780, 781 (1943); Pacific Contact Laboratories, Inc. v. Solex Laboratories,
Inc., 209 F.2d 529, 533; Brown & Sharpe Mfg. Co. v. Kar Engineering Co., 154 F.2d 48, 51-52;
In re Shortell, 142 F.2d 292, 295-296, 31 CCPA (Pat.) 1062, 1069.
[8] "There is no provision corresponding to the first sentence explicitly stated in the present
statutes, but the refusal of patents by the Patent Office, and the holding of patents invalid by the
courts, on the ground of lack of invention or lack of patentable novelty has been followed since
at least as early as 1850. This paragraph is added with the view that an explicit statement in the
statute may have some stabilizing effect, and also to serve as a basis for the addition at a later
time of some criteria which may be worked out."
"The second sentence states that patentability as to this requirement is not to be negatived by the
manner in which the invention was made -- that is, it is immaterial whether it resulted from long
toil and experimentation or from a flash of genius."
10
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